Summary
The United States Court of Appeals for the Federal Circuit reviewed an International Trade Commission determination that Amkor Technology’s patent was invalid under 35 U.S.C. § 102(g)(2) based on the alleged prior invention of Carsem’s predecessor. The court held that the Commission improperly applied the Oka rule and that Carsem failed to establish prior invention by clear and convincing evidence. The court reversed the Commission’s invalidity determination and declined to affirm on alternative anticipation or obviousness grounds.
Topics
Practice areas
Questions Presented
- Whether a foreign invention may satisfy the 'made in this country' requirement of 35 U.S.C. § 102(g)(2) through a domestic disclosure sufficient to establish conception.
- Whether § 102(g)(2) requires the domestic disclosure of a foreign invention to be in writing.
- Whether the Oka rule assigning the last possible date in an asserted range applies to a patent owner in a validity dispute under § 102(g)(2).
- Whether the Commission properly construed the claim terms 'fully around a circumference of the die pad' and 'fully around the die pad.'
- Whether the patent claims were invalid as anticipated or obvious in view of JP-456, alone or in combination with JP-964 and JP-284.
Holdings
- An inventor of foreign origin may rely on the date an invention was disclosed in the United States as a conception date for priority purposes under § 102(g)(2), consistent with the interpretation of the 'made in this country' language in Scott.
- Section 102(g)(2) does not impose a per se writing requirement for domestic disclosure of a foreign invention; oral or written communication may suffice if it fully discloses the complete and operative invention sufficiently to establish conception.
- The Oka rule does not apply to a patent owner in a validity dispute under § 102(g)(2). Carsem was required to prove by clear and convincing evidence that the ASAT invention was conceived in the United States before Amkor's invention, and evidence showing only that ASAT might have conceived first was insufficient.
- The claim terms require the lip to run fully around the exposed sides of the die pad, except at regions where tie bars contact the die pad; features other than tie bars, such as fused leads, may not interrupt the lip under the patent's disclosure.
- JP-456 did not anticipate the asserted claims under the Commission's claim construction because its fused lead interrupted the lip and therefore the reference lacked a lip extending fully around the die pad.
- The court declined to affirm the Commission's invalidity determination on the alternative obviousness grounds because Carsem failed to identify evidence of a motivation or reason for a person of ordinary skill to remove the fused lead from JP-456.
Key quotations
“Evidence establishing that there might have been a prior conception is not sufficient to meet the clear and convincing burden needed to invalidate a patent.” (at 15-16)
“Because Carsem failed to prove prior invention in the United States by clear and convincing evidence, this court reverses the Commission’s determination that the ’277 Patent is invalid under § 102(g)(2).” (at 16)
Factual background
Amkor's '277 patent covers near chip-scale integrated-circuit packages using a leadframe, die pad, contacts, and an encapsulant. Carsem's accused products allegedly infringed claims requiring a lip to extend fully around the circumference of the die pad. The Commission ultimately determined that the ASAT invention qualified as prior art under § 102(g)(2), based on evidence placing ASAT's conception in April or May and Amkor's conception within a later range. The ASAT invention's domestic disclosure and the effect of fused leads on the claimed lip were central to the appeal.
Procedural history
Amkor initiated a section 337 investigation alleging that Carsem imported and sold products infringing claims of the '277 patent. After multiple initial determinations, claim-construction proceedings, and remands concerning the ASAT invention, the Commission held that the ASAT invention was prior art under § 102(g)(2) and that the asserted patent claims were invalid. Amkor appealed to the Federal Circuit, which reversed the § 102(g)(2) determination, affirmed the Commission's claim construction and anticipation determination, declined to affirm on the alternative obviousness grounds, and remanded.
Remand instructions
Remanded for further proceedings consistent with the opinion after reversal of the Commission's determination that the '277 patent was invalid under § 102(g)(2).